タグ: UNIQLO

UNIQLO lost in its attempt to oppose TM Reg no. 6746724 for the mark “UNIPRO” in class 28 due to dissimilarity and unlikelihood of confusion with a world-famous Japanese clothing brand “UNIQLO”.
[Opposition case no. 2023-900278, Gazette issued on December 27, 2024]

UNIPRO

Kabushiki Kaisha UNIQUE, a Japanese corporation, filed a trademark application for the mark “UNIPRO” in relation to pet toys and sports equipment in class 28 with the Japan Patent Office (JPO) on April 17, 2023 [TM App no. 2023-41531]. The mark has the word “UNIPRO” written in two lines inside a square (see below).

On October 10, 2023, the JPO examiner approved the registration of the applied mark without issuing an office action. Subsequently, the JPO published the mark for a post-grant opposition on October 27, 2023.

Opposition by UNIQLO

Fast Retailing Co., Ltd., a public Japanese retail holding company, is best known for its flagship brand UNIQLO. The company filed an opposition with the JPO on December 8, 2023 by citing its own earlier trademark registrations for the UNIQLO mark.

Fast Retailing claimed that the applied mark should be cancelled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law because of a high degree of similarity to and a likelihood of confusion with famous fashion brand UNIQLO when used on the goods in question.

Fast Retailing argued, among other things, visual and aural similarity between UNIPRO and UNIQLO. Arranging the first three letters “UNI” in the top line and the last three letters in the bottom line in a square would be anything but a coincidence. Since the mark “UNIQLO” is a coined word and has become famous to indicate Japanese clothing brand operated by Fast Retailing Group, the applicant must have intended to free-ride on the goodwill bestowed on UNIQLO and unjustifiably obtain profits by using the applied mark “UNIPRO” that is confusingly similar to the cited mark.

JPO decision

The JPO Opposition Board found that the cited mark and “UNIQLO” have been widely recognized among relevant consumers in Japan to indicate a source of clothing managed by Fast Retailing Group.

In the meantime, the Board held “UNIPRO” is dissimilar to and unlikely to cause confusion with “UNIQLO” by stating:

1. The applied mark and the cited mark both consist of white letters and a square. They also share the letters “UNI” in the top line and “O” in the bottom line. However, the difference of the letters “PR” and “QL” in the bottom line gives an impression that the marks represent different word in a square. Therefore, the applied mark is distinguishable from the cited mark in appearance.
2. Comparing the sound of the applied mark with that of the cited mark, there is a difference in the third tone of “pu” and “ku”. This difference has anything but negligible effect on the overall tone and impression since respective sound has a short four-syllable structure. Thus, the Board finds it reasonable to conclude that there is no risk of mishearing each other.
3. Conceptual aspect does not have impact on the assessment of likelihood of confusion, since both marks are meaningless.

Taking into consideration a low degree of similarity between the marks, even if the cited mark has become famous among relevant consumers, the Board has no reason to believe the consumers would consider an origin of the goods in question bearing the applied mark from UNIQLO or an undertaking economically or systematically linked to Fast Retailing.

Based on the foregoing, the Board decided to dismissed the entire opposition.